Julia Haart v. Karrant Santos / Marca Blindada - Marcas & Patentes / Gabriel Verde
Claim Number: FA2112001977775
Complainant is Julia Haart (“Complainant”), represented by Evan N. Spiegel of Lavely & Singer Professional Corporation, California, USA. Respondent is Karrant Santos / Marca Blindada - Marcas & Patentes / Gabriel Verde (“Respondent”), Brazil 01310-100.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2021; the Forum received payment on December 21, 2021.
On December 21, 2021; Dec 22, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com; GoDaddy.com, LLC and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com; GoDaddy.com, LLC has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com; GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@juliahaart.com, postmaster@juliahaartofficial.com, postmaster@officialjuliahaart.com. Also on December 27, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE : MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively the same person and/or entity, operating under several aliases. Rule 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In this proceeding there are three domain names and two respondents. However, Complainant submits in a strong case presented on her behalf that because the evidence shows that the three domain names were registered or owned or controlled by the same person or entity using aliases, there is only one domain name holder within the meaning of Rule 3 (c). Complainant relies on the registration information provided for the three domain names and the use of a common telephone number. Moreover, the evidence shows that while Respondent was trying to extort money from Complainant in the course of attempting to sell the domain names to her, it not only admitted but asserted that it owned and controlled all three of the domain names. The latter piece of evidence is incontrovertible and shows that what was involved here was one exercise by in effect the same person to acquire three domain names and sell them to Complainant as what was described as a “package”.
Having regard to all of those considerations, the whole of the evidence and the persuasive case advanced on behalf of Complainant, the Panel finds the domain names are commonly owned and/ or controlled by a single Respondent who is using multiple aliases. The proceeding was therefore properly issued and may go forward on that basis.
For reasons of convenience, the Respondents will hereafter be referred to as “Respondent”.
A. Complainant
Complainant made the following contentions.
Complainant is a well-known celebrity and personality. Complainant submits that she has common law rights in the JULIA HAART mark. Respondent’s <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety, two of them add the generic word “official” and all three add the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its JULIA HAART mark in the disputed domain name. Respondent does not use the <juliahaart.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead previously hosted parked, pay-per-click links, and now hosts a disparaging article about Complainant.
Respondent registered and uses the <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com> domain names in bad faith. Respondent offers the disputed domain names for sale. Respondent attracts internet users for commercial gain to the disputed domain names’ resolving websites, which feature parked, pay-per-click links, and now features a disparaging article about Complainant. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the JULIA HAART mark.
In support of her case, Complainant produced extensive written submissions, documentary evidence in support of her submissions on issues of fact, Declarations by Evan N. Spiegel, Robert Brotherton and Complainant herself and cited prior UDRP decisions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States fashion designer, entrepreneur, author, actress, celebrity and television personality.
2. Complainant has established her common law rights to the JULIA HART mark and that those rights were acquired well prior to the registration of the disputed domain names.
3. Respondent registered the <juliahaart.com> domain name on July 18, 2021, the <juliahaartofficial.com> domain name on July 21, 2021 and the <officialjuliahaart.com> domain name on July 28, 2021.
4.There is no evidence to show that Respondent has a right or legitimate interest in any of the domain names.
5. The evidence shows that Respondent registered and used each of the domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which she may rely. Complainant does not have a registered trademark, although she has an application to the United States Patent and Trademark Office for a registered trademark and submits that in any event she has common law rights in the JULIA HAART mark which is adequate to establish standing to file a Complaint under the UDRP.
Common law rights in a mark, including celebrity names, are generally demonstrable through secondary meaning in the name under Policy ¶ 4(a)(i), which may be established through a variety of factors including long standing use of a mark, public and media recognition, advertising expenditure, and holding of a domain name identical to a mark. See Bayless v. Cayman Trademark Trust, FA 648245 (Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”). The evidence is that Complainant is a fashion designer, entrepreneur, actress, and television personality. Complainant cites her founding of a prestigious shoe company in 2013, her role as a fashion director since 2016, ownership of a talent and fashion agency since 2019, and starring in various TV shows and on talk shows since at least 2017. Complainant provides evidence, including IMDB listings of TV shows she has starred in, an IMDB profile of herself, articles about her publicity, announcements for here 2021 TV show, her Wikipedia page, and screenshots of the <juliahaart.com> domain name that Complainant originally registered, and an application USPTO trademark registration. See Compl. Annexes 1 – 3, Exs. D – F, N – R.
The evidence submitted on behalf of Complainant is substantial in both quantity and quality and a strong argument has been advanced to show that Complainant has acquired trademark rights in her own name. The evidence and submissions show that Complainant has used her name in her various businesses and in trade and commerce and thus it can be said without doubt that her name is recognized widely as being the source of the goods and services provided under that name. That position was strongly supported by the detailed documentary evidence tendered on Complainant’s behalf and the Declarations by Evan N. Spiegel, Robert Brotherton and Complainant herself. The Panel therefore finds that Complainant has established her common law trademark rights in the JULIA HAART mark under Policy ¶ 4(a)(i) and that she acquired those rights well prior to the registration of the disputed domain names.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s JULIA HAART mark. Complainant argues that Respondent’s <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com> domain names are identical or confusingly similar to Complainant’s JULIA HAART mark. Under Policy ¶ 4(a)(i), adding generic words along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); The disputed domain names incorporate the JULIA HAART name in its entirety along with the “.com” gTLD, which is disregarded for this purpose and two domain names incorporate the word “official” on either side of the mark. Therefore, the Panel finds the <juliahaart.com> domain name is identical to the JULIA HAART mark and the <juliahaartofficial.com> and <officialjuliahaart.com> domain names are confusingly similar to the JULIA HAART mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that she must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has clearly made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JULIA HAART mark and to use it in its domain names, using the mark in its identical form in one of the domain names and merely adding the generic word “official” in the other two domain names;
(b Respondent registered the <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com> domain names on July 18, 2021, July 22, 2021, and July 28, 2021 respectively;
(c) As the Panel expressly finds that Respondent acquired the <juliahaart.com> domain name with the intention of extorting money from Complainant under the guise of selling it to her and then proceeded to register the other two domain names with the same motive, it finds that such conduct could not conceivably give rise to a right or legitimate interest on the part of Respondent in any of the domain names;
(d) Respondent has caused the <juliahaart.com> domain name to be used to support previously hosted parked pay-per-click links, and a disparaging article about Complainant and has promoted that domain name and the other two domain names as a “package”;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use her JULIA HAART mark in the disputed domain names or in any other manner. Under Policy ¶ 4(c)(ii), relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS of record identifies Respondent as “Karrant Santos”, “Marca Blindada – Marcas & Patentes”, and “Gabriel Verde”, and nothing in the record rebuts Complainant’s submission that she never authorized or licensed Respondent to use the JULIA HAART mark in the disputed domain names or anywhere else. See Registrar Verification Emails. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(g) Complainant argues that Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked, pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the <juliahaart.com> domain name’s previous resolving website, which resolved to parked, pay-per-click links. See Compl. Ex. G. The other domain names were registered and offered for sale by the same Respondent, and an inspection of their resolving websites shows the same current resolving website as the <juliahaart.com> domain name, which features no content but a third party tabloid article about Complainant. See Compl. Ex. H. As the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(h) in particular the Panel finds Respondent lacks rights and legitimate interests in the <juliahaart.com> domain name as it re-registered the domain name after Complainant had previously been the registrant of the domain name which was inadvertently not re-registered on expiry, due to an oversight. Registering a domain name that a Complainant previously owned is generally not considered indicative of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides evidence that she previously owned the disputed domain name and argues Respondent registered it after its inadvertent lapse of registration. See Compl. Exs. D and E. Thus, the Panel finds Respondent has no rights or legitimate interests in the <juliahaart.com> domain name under Policy ¶ 4(a)(ii) for the specific reason given with respect to that domain name, as well as not having any rights or legitimate interest in any of the domain names.
That case was strongly supported by the detailed documentary evidence tendered on Complainant’s behalf and the Declarations by Evan N. Spiegel, Robert Brotherton and Complainant herself.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that she must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, a strong argument has been made out on behalf of Complainant that Respondent registered and uses the disputed domain names in bad faith by offering them for sale and acquiring them for that purpose. Under Policy ¶ 4(b)(i), past panels have found evidence of bad faith registration and use where a Respondent registers a domain name with the intent to sell it and offers it for sale. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). The Panel notes, as part of the detailed case put forward on behalf of Complainant, screenshots of emails from the <juliahaart.com> domain name’s website while under the control of Respondent, where Respondent claims ownership of all three domain names and offers them for sale to Complainant. See Compl. Exs. S – Y. Complainant further notes that the content of these emails strongly evinces Respondent’s intent to sell the domain names through extortion and blackmailing tactics and the Panel agrees that this was the intention of Respondent from the moment it conceived the notion of acquiring the <juliahaart.com> domain name and subsequently when it acquired the other two domain names. Therefore, the Panel finds Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(i).
The intention and conduct of Respondent as shown by the evidence are particularly bad and they underline the bad faith nature of everything Respondent has done in this matter. It acted opportunistically in the first place by buying the domain names; it tried to intimidate Complainant to buy the domain names by claiming that Chinese interests wanted to buy them for a shoe business, which was an obvious threat to sell them to a business competitor of Complainant, that Russian interests wanted them for an escort service and that “even a Brazilian” was interested. The asking price on August 9, 2021 was US $200,000 for the “ package”, reduced subsequently to US $ 150, 000. When Complainant did not buy the <juliahaart.com> domain name, Respondent gave Complainant what was clearly intended to be a taste of what was in store for her if she did not co-operate, by publishing on the website a disparaging article about Complainant. There is no way in which such conduct could be described in any way other than bad faith, both in the registration of the domain names and in their use.
Secondly, Complainant argues that Respondent registered and used the disputed domain names in bad faith because under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click link websites is generally considered evidence of bad faith attraction and disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). The Panel agrees with Complainant’s persuasive submission and evidence of this use for the <juliahaart.com> domain name, and also that the other domain names were used in this manner given their identical current use and having in effect the same owner. See Compl. Exs. G and H. Therefore, as the Panel agrees with Complainant, it finds Respondent has registered and used the <juliahaart.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv) and by clear inference the two other domain names as well.
Thirdly, Complainant argues that Respondent registered the disputed domain names with bad faith actual knowledge of Complainant’s rights in the JULIA HAART mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally considered evidence of bad faith, and may be demonstrated through Respondent’s incorporation of a mark into a domain name and its use of the domain name. In any event, Respondent must have been aware of Complainant’s significant and prestigious name and brand as she is, on any test, famous and Respondent must have been motivated by the consideration that, because she was so famous, the domain names had a value that he could parlay into making money for himself. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). In this regard ,the Panel notes Complainant’s screenshots of the <juliahaart.com> domain name, which resolves to a disparaging article about Complainant, as well as the fact that the other two domain names resolve to the same website as the <juliahaart.com> domain name and were clearly seen by Respondent as parts of a “package”. See Compl. Exs. G and H, S – Y. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the JULIA HAART mark under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the JULIA HAART mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant’s case on bad faith was strongly supported by the detailed documentary evidence tendered on her behalf and the Declarations by Evan N. Spiegel, Robert Brotherton and Complainant herself.
Complainant has thus made out the third of the three elements that she must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC,
Panelist
Dated: February 2, 2022
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